Trade mark law, case II GSK 92/05

November 11th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 29 June 2005 case file II GSK 92/05 held that a sign that is depicted as confectionery, or a cookie called delicja (Jaffa cake) cannot be registered as a trade mark, because it only shows and serve as a shape of a product. The Polish Patent Office has granted the right of protection for the 3D trade mark R-116211. The applied sign was described as a flat round cookie, the lower portion being the disc with rounded edges is colored in pale yellow, the top of the cake has circular elevations of smaller diameter, the surface of which is convex, rectangular grid, and the entire upper surface of the cake is in dark chocolate brown. Five different Polish companies have requested the PPO to invalidate the right of protection, and argued that it was applied contrary to Polish and European regulations. The PPO invalidated the right in question. The owner, LU POLSKA Spółka Akcyjna, filed a complaint against this decision. The Voivodeship Administratie Court in its judgment of 18 October 2004 case file II SA 3199/03 dismissed it. LU POLSKA filed a cassation complaint.

The Supreme Administrative Court ruled that the ability of distinguishing the goods or services (the so-called “abstract ability to distinguish” goods or services) must be distinguished from the “sufficient distinctiveness” of an applied trade mark. Only after finding that a given sign is capable to serve as a trademark, its distinctive ability in concreto is subject to examination. A sign cannot be identified with the product itself. The Court ruled that the interpretation of Articles 4 and 7 of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, should be made in accordance with the provisions of Article 3(1)(e) of the First Directive 89/104. Accordingly, signs which consist exclusively of the shape which results from the nature of the goods themselves shall not be registered or if registered shall be liable to be declared invalid. This regulation should be interpreted in the manner that signs which consist exclusively of the shape of goods shall not be registered if it is proven that basic, functional features of such shape are assigned only to technical characteristics.


The contradictions with the law or rules of social coexistence, that are the condition of inadmissibility to register a trade mark, must not only connect directly to the sign itself, but also to the circumstances surrounding the registration of the mark if they contain elements contrary to law or the rules of social coexistence. In addition, the violation of other laws than those included in the TMA should be considered as the registration contrary to law. The registration of a 3D trade mark whose sole purpose is to monopolize the market of a given product and thus deprive the competitors of the freedom of establishment as regards the possibility of further production of the same product, is violation of the provisions of the law.